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Choosing a Domain Name – The Legal Side of Things

There are certainly plenty of articles and posts on the web talking about why you should choose a domain name that is short, sweet, relevant and a “.com”. No one wants to be typing out a 32 letter domain name for your email address or trying to brand a site whose domain has abbreviations and a hyphen. Here’s a great article on choosing a domain name by MOZ.

With this article we wanted to cover a different aspect that involves the legal considerations of choosing a domain name. Too often clients assume that if a domain name is available they are OK to use it. While this can be true, it may overlap another business’s name or trademark and you may find yourself with legal issues.

Please bear in mind we are not attorneys, nor do we play one on this blog. We do, however, have considerable experience with our own trademarks and assisting with clients with their businesses. Hopefully some of this experience can be helpful to you.

Before we dive in please keep these two rules of thumb in mind regarding this topic:

When in doubt, seek counsel from a trademark or intellectual property attorney. This process can be expensive, but it is far less costly than a legal proceeding.

People can litigate for any reason, even one that is completely false. Take the time to pick a good domain name that is unique. There is no sense starting things off in “iffy” territory. It will be far easier to defend yourself if you have your ducks in a row.

So what do I need to do to protect myself when choosing a domain name?

Stay away from domain names that contain or are very similar to established brand names.

Do extensive search engine research to identify businesses, services or products with similar domain or business names. If your search uncovers numerous examples of use, especially in overlapping services or industries, you should probably consider a different name. If you find none or very few, it certainly is more promising. Overlapping industries/services is a big deal so if you find any matches or similarities you should probably steer clear.

Pay close attention to the “TM” and “R” after names and products. If you see those they usually indicate that someone has taken the time and effort to officially register their trademarks and will be motivated to pursue legal action if infringed upon.

Check to see if any trademarks or business names are registered in your state that overlaps yours. Again, if you find similar ones it is best to think up something else.

Ask yourself, “Could someone get my domain name confused with theirs?” If the answer is “yes,” you have at a minimum a branding issue. If the answer is yes, coupled with overlapping services/products, you will have a legal issue as well. Either way, you’ll probably want to look elsewhere.

I see businesses with the same name all the time. Why wouldn’t that apply in my case?

It may be that the businesses you are seeing just don’t care that their names are similar, but usually it has to do with the locality of the business. Businesses that deal only within in a specific state or town and don’t do work in other states can’t claim that their “turf” is being stepped on. If they are marketing or selling to people in multiple states (which websites inherently do) your “turf” suddenly becomes everywhere and the likelihood of confusion goes up.

I can’t find any names that are available. What now?

Brainstorm up as many words and phrases that apply to your business and products as possible. You may find a combination that will work for you.

Take the words you have come up with and cross reference them using a thesaurus. There are plenty of words in the English language – certainly too many to think of off the top of your head!

Use a domain search tool like ours at http://domains.zcreative.com that not only tells you what is available but also recommends some similar names you may not have thought of.

I found a great domain name, should I reserve the other extensions as well?

Absolutely. If you have taken the necessary time to scout everything out, why leave opportunities for someone else that isn’t doing their due diligence to pick them up? It’s far less expensive to buy domain names than to pay attorney fees. There are a ton of extensions these days and more coming ever year so you will most likely have to decide how far you want to go in protecting your “turf”. At a minimum we recommend reserving .com, .net, .org, .co, .biz and .mobi.